Firm News

PTAB Designates a Flurry of Opinions As Precedential In Wake of Boalick Appointment

»»Since his official appointment to his post as Chief Judge of the PTAB, Boalick has wasted no time in making his mark. Beginning the very day his permanent appointment became official last month, the PTAB has issued a number of precedential opinions. Most notably, the new Precedential Opinion Panel or POP (created in September’s updates […]

Scott Boalick Appointed as Chief Judge of PTAB

»»Scott Boalick has officially begun his permanent term as Chief Judge of the Patent Trial and Appeal Board. After having served in an interim role since September, the USPTO made his appointment official last month. Boalick started at the PTAB in 2007 and has since acted as an administrative patent judge, a vice chief judge, […]

Fast Food Empires Put Their Weight Behind Trademarks

»»Fast food companies have been actively asserting their trademarks, recently highlighted by noteworthy activity by both McDonald’s and In-N-Out. McDonald’s aggressive defense of its trademarks hit a snag recently as the EUIPO canceled their trademark for “Big Mac” for failing to provide sufficient evidence of use. In their argument, McDonald’s relied mainly on affidavits from […]

Iancu Testifies Before Senate Judiciary Subcommittee on IP

»»On March 13, 2019, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, testified before the U.S. Senate’s Committee on the Judiciary’s subcommittee on Intellectual Property to discuss the USPTO and the current state of patent and trademark law in the United States. In their […]

Supreme Court Curbs Copyright Owners With Pair of Copyright Rulings

»»Two recent Supreme Court decisions may have far reaching consequences for those looking to assert (or avoid) copyright infringement claims. Registration Requirement On March 4, 2019, the Court ruled on Fourth Estate Public Benefit Corp. v., where it held that Copyright Infringement was only available after a copyright is registered at the Copyright Office. […]

Supreme Court Grants Cert To Iancu On USPTO Attorney’s Fees For District Court Review

»»The Supreme Court has granted cert to Iancu in Iancu v. NantKwest, Inc. to resolve the question of whether all expenses incurred by the USPTO must be paid for by the applicant in a district court action under 35 U.S.C. 145 regardless of the outcome. §145 allows for de novo review of an adverse PTAB […]

Click-To-Call Decision Distinguished by PTAB as it Faces Appeal to Supreme Court

»»Earlier this month, Dex Media (the remaining appellee) filed a Petition for Writ of Certiorari over the Federal Circuit’s application of the one-year time-bar in Oracle Corp. v. Click-to-Call Technologies LP. According to the Federal Circuit, the one-year limit to file an IPR after being served with a complaint under 315(b) of the America Invents […]

Supreme Court Affirms Federal Circuit In Helsinn On-Sale Interpretation

»»On Tuesday, January 22, 2019, the Supreme Court upheld the Federal Circuit’s ruling in Helsinn Healthcare v. Teva Pharmaceuticals and confirmed that Congress did not change the meaning of the term “On-Sale” when it passed the AIA in 2012. For a full description of the case’s disposition, see our previous update on the oral argument […]

USPTO Releases New Guidance on §101 and §112 Eligibility

»»As Director Iancu promised in his recent address,  the USPTO has issued revised guidance on the evaluation of eligibility. Specifically, the guidance sheds light on how the USPTO will address §101 abstract analysis and §112 in relation to computer implemented inventions. This memo is part of Iancu’s long-stated mission of bringing greater clarity and predictability […]

Federal Circuit Appeal on Trade Show Material as Prior Art Highlights Differences Between PTAB and ITC

»»The different standards between the PTAB and the ITC came to bear in a recent Federal Circuit appeal between Nobel Biocare Services AG and Instradent USA, Inc. (Appeal No. 2017-2256 ). The decision came on an appeal from an IPR where Instradent sought to invalidate Nobel’s patent relating to dental implants with a critical date […]